Ex Parte Schaeffer et al

Board of Patent Appeals and Interferences

Jan 29, 2001

08398259 (B.P.A.I. Jan. 29, 2001)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JON C. SCHAEFFER, MARK A. ROSENZWEIG,
NORMAN R. LINDBLAD and WENDY H. MURPHY
________________
Appeal No. 1998-2409
Application 08/398,259
________________
ON BRIEF
________________
Before WARREN, OWENS and JEFFREY T. SMITH, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-20, which are all of the claims in the application.
THE INVENTION
Appellants’ claimed invention is directed toward a method
for preparing a coated article and toward the coated article.
Appellants state that except for the recited substrate sulfur
content of less than about 1 ppm, articles of this type were
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Application 08/398,259
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known in the art (specification, page 5, lines 25-26). Claims 1
and 16 are illustrative:
1. A method for preparing a coated article, comprising the
steps of:
furnishing an article substrate having a free sulfur content
of less than about 1 part per million;
depositing a layer of a platinum-group metal over the
article substrate; and
applying a ceramic coating over the layer of a platinum-
group metal.
16. A coated article, comprising:
an article substrate having a sulfur content of less than
about 1 part per million;
a platinum-group metal layer overlying the article
substrate; and
a ceramic coating overlying the platinum-group metal layer.
THE REFERENCES
McGill et al. (McGill) 4,399,199 Aug. 16, 1983
Moroishi et al. (Moroishi) 4,530,720 Jul. 23, 1985
Osozawa et al. (Osozawa) 4,626,408 Dec. 2, 1986
THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Osozawa or Moroishi, in view of McGill.
OPINION
We reverse the rejection over Osozawa in view of McGill. As
for the rejection over Moroishi in view of McGill, we affirm the
Appeal No. 1998-2409
Application 08/398,259
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rejection of claims 1, 3-6, 9-16, 18 and 20 and reverse the
rejection of claims 2, 7, 8, 17 and 19.
Rejection over Osozawa in view of McGill
Osozawa discloses a Ni-based alloy which, Osozawa states, is
“excellent in intergranular corrosion resistance, stress
corrosion cracking resistance, mechanical strength and hot
workability” (col. 1, lines 9-12). Osozawa teaches that when the
alloy contains neither B nor Mg, the hot workability is markedly
lowered when the S content is higher than 0.0010% (10 ppm)
(col. 2, lines 46-49). The lowest exemplified alloy sulfur
contents are 6 ppm in an example of the invention (table 1, alloy
no. 3), and 4 ppm in a comparative example (table 1, alloy
no. 12). Osozawa does not indicate whether the disclosed sulfur
content is free sulfur, sulfur which is chemically combined with
one or more elements, or total sulfur. Thus, it is not apparent
whether Osozawa’s alloy has a free sulfur content within the
range recited in appellants’ claims.
McGill discloses an article suitable for use at temperatures
up to 1600°C comprising a metallic substrate having thereon a
coating or layer including one or more of the platinum group
metals or an alloy including one or more of the platinum group
metals, on which is deposited a ceramic thermal barrier layer
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Application 08/398,259
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(col. 2, lines 29-50). McGill states that “the aim of the
present invention is to improve the adherence, durability and
corrosion resistance of a thermal barrier system without
affecting the prime purpose of said system, namely to reduce
substrate metal surface temperature thus allowing current high
temperature materials to operate effectively in hotter combustion
gas streams” (col. 3, line 57 - col. 4, line 2).
The examiner argues that it would have been obvious to one
of ordinary skill in the art to optimize Osozawa’s sulfur content
within Osozawa’s range of at most 10 ppm, thereby arriving at
appellants’ free sulfur content of less than about 1 ppm (answer,
pages 4-5). Appellants, however, have selected their free sulfur
content for the purpose of reducing the tendency of the
protective system to debond (specification, page 6, lines 7-11).
Osozawa, on the other hand, selected his sulfur content, which
has not been established by the examiner as being free sulfur
rather than combined or total sulfur, to improve hot workability
(col. 2, lines 46-49). The examiner has not explained why
Osozawa and McGill would have led one of ordinary skill in the
art to optimize Osozawa’s sulfur content for appellants’ purpose,
or why it reasonably appears that optimizing Osozawa’s sulfur
content for the different purpose disclosed by Osozawa would
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result in a free sulfur content of less than about 1 ppm. The
examiner has merely provided speculation that optimizing
Osozawa’s sulfur content would result in the free sulfur content
recited in appellants’ claims, and such speculation is not
sufficient for establishing a prima facie case of obviousness.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Sporck, 301 F.2d
686, 690, 133 USPQ 360, 364 (CCPA 1962). Accordingly, we reverse
the rejection over Osozawa in view of McGill.
Rejection over Moroishi in view of McGill
Moroishi discloses that sulfur has an adverse effect on the
oxidation of austenitic steels and that the oxidation resistance
of such steels can be remarkably improved when the sulfur content
is limited to not more than 0.003% (30 ppm) (col. 2, lines 46-
51). It is desirable, Moroishi teaches, to make the sulfur
content as low as possible, preferably less than 0.0015% (15 ppm)
(col. 6, lines 65-66). The lowest disclosed sulfur content is
0.001% (10 ppm) (figure; tables 2-7). Moroishi teaches that
“sulfur in an extremely small amount, i.e., not more than 0.003%
[30 ppm], easily and completely combines with any Ca, Mg, etc.
introduced into the steel from a refractory material of a furnace
structure or a slag during the preparation of the melt to form a
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stable sulfide or oxysulfide of Ca, Mg, which is stable at a high
temperature. These compounds do not decompose at high service
temperatures to provide free sulfur” (col. 3, lines 48-56). To
accelerate the formation of stable sulfur compounds and thereby
further improve resistance to oxidation, Ca, Mg, rare earths or Y
can be intentionally added to the melt (col. 3, lines 48-66;
col. 6, lines 43-55). Thus, it reasonably appears that
Moroishi’s alloy either has essentially no (i.e., less than about
1 ppm) free sulfur, due to the presence of elements such as Ca
and Mg, or that the reference would have led one of ordinary
skill in the art to add Ca, Mg, rare earths or Y in order to
essentially eliminate any free sulfur and thereby improve
oxidation resistance.
McGill teaches that the substrate onto which his platinum
group metal-containing coating or layer and thermal barrier
coating or layer are applied preferably “comprises an alloy, for
example a Ni-, Co or Fe-based superalloy or a refractory alloy,
or a refractory metal” (col. 2, lines 37-39). McGill’s invention
is described with respect to gas turbine engine components, but
also applies to “other technologies such as coal gasification,
glass processing and oil refining” (col. 4, lines 11-13).
Moroishi’s austenitic steels are used in high temperature
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apparatus such as a heating furnace, heat exchanger, burner of
heating equipment, automobile exhaust converter etc.” (col. 1,
lines 17-20), which are the type of applications envisioned by
McGill. Consequently, the combined teachings of Moroishi and
McGill would have fairly suggested, to one of ordinary skill in
the art, applying McGill’s coatings or layers to Moroishi’s
substrate to obtain the benefit in Moroishi’s apparatus of
McGill’s thermal barrier layer system.
Appellants argue that Moroishi does not disclose a coating
and McGill does not mention sulfur (brief, pages 4-9). This
argument is not well taken because appellants are attacking the
references individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426,
208 USPQ 871, 882 (CCPA 1981); In re Young, 403 F.2d 754, 757-58,
159 USPQ 725, 728 (CCPA 1968). As discussed above, Moroishi and
McGill, taken together, would have fairly suggested, to one of
ordinary skill in the art, applying McGill’s coatings or layers
to Moroishi’s essentially sulfur free substrate.
Appellants argue that neither of the references discloses
the limitations in claims 3-6 (brief, page 9). However, the
limitation in claim 3 that the substrate is fabricated from a
material having a free sulfur content of less than about 1 ppm
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reasonably appears to be met by Moroishi’s teaching that Ca, Mg,
etc. can be present in the melt such that they combine with
sulfur to eliminate the adverse effects of free sulfur (col. 3,
lines 48-58; col. 6, lines 47-51). The requirement in claim 4
that a scavenger element is reacted with free sulfur to reduce
the free sulfur content to 1 ppm, the requirement in claim 5 that
the scavenger is yttrium, hafnium or zirconium, and the
requirement in claim 6 that the substrate is processed to reduce
the free sulfur content to less than about 1 ppm, would have been
fairly suggested to one of ordinary skill in the art by
Moroishi’s teaching that Ca, Mg, rare earth or Y can be added to
form stable sulfur compounds from free sulfur, thereby
eliminating the undesirable effects of free sulfur (col. 3, lines
16-66; col. 6, lines 47-55).
For the above reasons we conclude, based upon the
preponderance of the evidence, that the invention recited in
appellants’ claims 1, 3-6, 14 and 16 would have been obvious to
one of ordinary skill in the art within the meaning of 35 U.S.C.
§ 103. Accordingly, we affirm the rejection over Moroishi in
view of McGill of these claims and claims 9-13, 15, 18 and 20
which each stand or fall with one of independent claims 1, 14
and 16 (brief, page 10).
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Claims 2, 17 and 19 require that the substrate is a nickel-
based superalloy. McGill’s substrate can be such a superalloy
(col. 2, lines 37-39). However, Moroishi teaches that it is
austenitic steels whose oxidation resistance is improved by low
sulfur content (col. 2, lines 29-33). The examiner does not
explain why the applied references would have led one of ordinary
skill in the art to apply Moroishi’s teaching to nickel-based
superalloys. Claim 8 requires that the substrate is contacted
with a hydrogen-containing gas at elevated temperatures. The
examiner has not explained where the applied references disclose
this step or why they would have fairly suggested it to one of
ordinary skill in the art. We therefore reverse the rejection
over Moroishi in view of McGill of claims 2, 7, 8, 17 and 19.
DECISION
The rejection of claims 1-20 under 35 U.S.C. § 103 over
Osozawa in view of McGill is reversed. The rejection under 35
U.S.C. § 103 over Moroishi in view of McGill of claims 1, 3-6, 9-
16, 18 and 20 is affirmed and of claims 2, 7, 8, 17 and 19 is
reversed.
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Application 08/398,259
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
tjo/ki
Appeal No. 1998-2409
Application 08/398,259
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Andrew C. Hess
General Electric Company
One Neumann Way H17
Cincinnati, OH 45215-6301